DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/20/2026 has been entered.
Claim Objections
Claims 5-7, 17, and 20 are objected to because of the following informalities:
In claim 5, line 8, “the subject data” should be --the subject medical treatment data-- to be consistent with its antecedent basis.
In claim 6, line 2, “the subject data” should be --the subject medical treatment data-- to be consistent with its antecedent basis.
In claim 7, line 2, “the subject data” should be --the subject medical treatment data-- to be consistent with its antecedent basis.
In claim 17, line 8, “the subject data” should be --the subject medical treatment data-- to be consistent with its antecedent basis.
In claim 20, line 8, “the subject data” should be --the subject medical treatment data-- to be consistent with its antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, it recites “providing to an end user a recommendation with respect to the same treatment based on the determined outcome of the same treatment” in the end. This is not supported by the written description. Specification [0041] discloses “provide a recommendation to an end user”; and [0042] discloses “provide a recommendation based on historical data.” Nowhere does the specification disclose the above indicated limitation at issue. For examples, there is no disclosure about what is recommended based on the outcome of the same treatment; and how the recommendation is made based on the outcome of the same treatment. One skilled in the relevant art will not be reasonably conveyed that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 15 and 18 are rejected by analogy to claim 1.
The other claim(s) not discussed above, or depending on the above claim(s), are rejected for inheriting the issue(s) from their linking claim(s).
Notes
Claim 1, 15, and 18 distinguish over the closest prior as discussed below.
Regarding claim 1, 15 and 18, the closest prior art of record fails to teach the features of claim 1 (as the representative): “determining, by a processor set, for each of a plurality of covariates in subject medical treatment data on a plurality of subjects, a statistical bias measure; selecting, by the processor set, one of the plurality of covariates based on the statistical bias measure; dividing, by the processor set, the plurality of subjects into two or more groups, based on the selected covariate, such that each of the two or more groups has an enhanced uniformity in a probability of being assigned a same treatment in a hypothetical randomized controlled trial; recursively repeating, by the processor set, for each respective group of the two or more groups, the dividing the plurality of subjects into the two or more groups, until reaching a selected stopping criterion for the respective group; deriving, by the processor set, observational results of one or more input factors of one or more of the groups resulting from the dividing; constructing, by the processor set, a causal tree having a plurality of leaves using the derived observational results, each of the plurality of leaves emulating a separate independent randomized control trial from which valid causal inference and associated treatment propensity based on the subject medical treatment data are estimated,” in combination with the rest of the claim limitations as claimed and defined by the Applicant.
Response to Arguments
The objections to the claims have been fully considered. However, there are new informalities found, as indicated in the objections above.
Regarding 35 USC 101, Applicant’s arguments, see Remarks at pp. 8-11, filed 02/20/2026, have been fully considered and are persuasive. The rejections of claims 1-20 regarding under 35 USC 101 have been withdrawn. The Examiner notes that the amended claims are narrowly tailored to specific steps of processing subject medical treatment data to determine an outcome of a treatment in a hypothetical randomized controlled trial on a plurality of subjects. As disclosed in the specification, randomized controlled trials are costly and time-consuming (see specification [0003]). The evidence on the record show that the amended claims are directed to a technical improvement in obtaining an outcome of a randomized controlled trial from existing subject medical treatment data, without the need of conducting onerous and expensive actual randomized controlled trials. This saves time and costs of developing new medical treatments (see specification [0021]). Therefore, the amended claims are direct to a technical improvement, and not an abstract idea, according to the USPTO Memorandum dated 12/05/2025 (“Advance notice of change to the MPEP in light of Ex Parte Desjardins”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C KUAN whose telephone number is (571)270-7066. The examiner can normally be reached M-F: 9:00AM-5:30PM.
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/JOHN C KUAN/Primary Examiner, Art Unit 2857
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